Balancing of rights, yet rendering justice to certification marks?

Balancing of rights, yet rendering justice to certification marks?A certification trademark is a mark that signifies that a product or service meets a certain standard, is of a particular quality or holds some assured characteristics. In the software development industry, a project management framework known as ‘Agile Methodology’ involves breaking the project into phases and emphasises continuous collaboration and improvement. It follows a cycle of planning, execution, and evaluation. ‘Scrum’ is one such form of Agile Methodology which provides incremental innovative solutions for project management and development in software engineering. It is the framework of choice adopted by some of the largest corporate enterprises in the world, including Fortune 500 companies like Google, Apple, Facebook, Amazon, Netflix and HSBC. Proficiency in Scrum, like proficiency in any other enterprise, is certifiable.

In a recent case, the plaintiff, Scrum Alliance Inc., based in Westminster, Colorado, USA, brought a suit against the defendants, Mr. Prem Kumar S. and Ors., for infringing and passing off the plaintiff’s certification marks CSM, Certified ScrumMaster and the logo . The plaintiff claimed to be the largest, most established and influential Scrum certification organisation. Worldwide, the plaintiff claimed to have certified over 12.48 lakh practitioners as “Scrum Masters”, of which over 1.72 lakh certificates had been issued in India alone. It was also claimed that the “Certified ScrumMaster (CSM)” certification issued by the plaintiff was the first known professional Scrum certification. The plaintiff further contended that it had been using the marks CERTIFIED SCRUMMASTER, CSM and the aforementioned logo in India since 2005, 2009 and 2013, respectively. These marks were applied for registration on June 30, 2016.

The defendants had applied for registration of the word mark CSM on November 23, 2012, which was granted on July 17, 2014. However, this was not registered as a certification trademark and only as a regular trademark. On December 16, 2016, the defendants filed an opposition with the Trademarks Registry against the plaintiff’s mark ; however, in view of possible litigation that would have ensued on account of the facts of the case favouring the plaintiff, the defendants withdrew their opposition. Thereafter, on June 21, 2018, the plaintiff wrote to the defendants not to use the word marks CSM or CERTIFIED SCRUM MASTER and that they should adopt, for its logo, a style which would fully distinguish it from the plaintiff’s logo. The defendants were also asked to darken or lighten the colour of the logo and to add a comprehensive disclaimer wherever they wished to use the logo, clearly stating that it was neither affiliated to the plaintiff nor related to it in any manner. The defendants conveyed they had agreed to the said conditions of the plaintiff and even wrote to the plaintiff that they had inserted the disclaimer on their website. However, it was learned that without holding any registration, the defendant had adopted the logo, which was claimed by the plaintiff to be deceptively similar to its logo . It was pointed out that the defendants also did not hold any registration for the word mark Certified Scrum Master. It was the case of the plaintiff that the defendants were using the marks CSM, CERTIFIED SCRUM MASTER and the impugned logo, which were deceptively similar to the registered certification trademarks of the plaintiff. The impugned marks were used to provide identical certification services, thereby enhancing the possibility of confusion.

The court noted that as per Section 75 of the Trade Marks Act, 1999, infringement took place when a person who was not authorised to use the registered certification trademark used an identical or deceptively similar mark in the course of trade, as a trade mark, in relation to goods or services in respect of which the certification trademark was registered. It was further observed that the defendant’s logo was deceptively similar to the registered logo of the plaintiff. The court noted that the use of the sun motif by the defendant was not a pure coincidence, and the defendant also did not have any reasonable justification for the same. The court held and observed that since the mark of the defendants was a conscious depiction of “Certified Scrum Master” encased in a “sun” motif, the intent to confuse the certification provided by the defendants with that provided by the plaintiff appeared to be prima facie apparent. It was further observed that even if one were to ignore the added matter in the impugned logo of the defendant, the words “Certified Scrum Master” constituted the essential feature of the mark, which was infringing the registered certification trademark “CERTIFIED SCRUMMASTER” of the plaintiff. As the likelihood of confusion existed, a case of infringement was made out against the defendant’s use of the marks CERTIFIED SCRUM MASTER and the impugned logo.

It was further observed that although the mark “CSM” of the defendants was not registered as a certification trademark, it was indeed registered under the Indian Trade Marks Act as a regular mark. Looking at Section 76 of the Act covering the exceptions to infringement, the court observed that the question of whether the use of the mark “CSM” by the defendants constituted infringement of the plaintiff’s registered certification trademark “CSM” had to be answered in light of the provision under Section 76(3). This provision clearly specified that where a certification trade mark was one of two or more trademarks registered under the Act which were identical or deceptively similar to each other, the use of any of those trademarks would not constitute infringement of the other registered trademark(s). Thus, the court observed that since the defendant’s mark “CSM” was registered as a trademark under the Act, its use by the defendants would not constitute infringement of the plaintiff’s registered certification mark “CSM”.

The court also held and observed that the argument of the defendant, that the plaintiff’s mark “Certified Scrum Master” was generic being a combination of three generic words, was not tenable. The court noted that the defendant was itself the proprietor of a registration for the mark “CSM”, which was merely an acronym for “CERTIFIED SCRUM MASTER”. Having obtained a registration for the acronym for “CERTIFIED SCRUM MASTER”, the defendants could not, prima facie, contend that “CERTIFIED SCRUMMASTER” was not entitled to registration. Moreover, it was observed that the defendant had entered the following trademark acknowledgement on its website:

“Certified Scrum Master (CSM)® is a Registered Trademark of GAQM.”

Although the acknowledgement was false on facts, it reflected the defendant’s understanding that “CERTIFIED SCRUM MASTER” was entitled to registration. As such, the court rejected the defendant’s argument that the mark was generic or not entitled to registration on the grounds of descriptiveness/genericness.

The court also analysed the contention of the defendant under Section 70 of the Trade Marks Act, which barred registration of marks as certification trademarks in the name of persons carrying on a trade in goods of the kind certified or a trade of the provision of services of the kind certified. The court observed that it could not be said that the plaintiff was carrying on a trade of the provision of services of the kind certified by the mark “CERTIFIED SCRUMMASTER”. It was noted that the plaintiff had certified scrum trainers who imparted training in Agile methodology and Scrum certifications. Imparting training in Agile methodology, which would entitle the trainee to obtain a Scrum certification, could not be regarded as training in the provision of the services rendered using the Scrum Agile methodology. It was noted by the court that the plaintiff did not do so, and thus, the bar of Section 70 did not apply to it.

Finally, regarding passing off, the court observed that the plaintiff would have to establish acquisition of goodwill and reputation by using the marks asserted in the plaint. The court noted that since the number of certifications granted by the plaintiff wasn’t substantial, the court wasn’t in a position to prima facie decide that sufficient goodwill or reputation had accrued to hold the defendants liable for passing off their services as those of the plaintiff. The determination of this aspect required a trial.

As a result, the court held that the plaintiff was entitled to an interlocutory injunction against the use by the defendants of the mark “CERTIFIED SCRUM MASTER” and the impugned logo . However, the defendants could not be injuncted from using the mark “CSM”.


Authors: Manisha Singh and Dheeraj Kapoor

First Published By: IP STARS Here